In Sanofi-Aventis v. Pfizer, Inc., the Federal Circuit affirmed the USPTO’s determination that Pfizer had proven an earlier date of invention of the DNA sequence at issue, even though it did not have the full, correct nucleotide sequence at the time. Because the subject matter at issue relates to cDNA, it remains patent-eligible under the Supreme Court’s Myriad decision. While the America Invents Act will phase out interference proceedings, new interferences still can arise between first-inventor-to-file patents and applications, and similar issues will remain relevant to questions of inventorship.
In Novozymes A/S v. DuPont Nutrition Biosciences APS, the Federal Circuit determined that the Novozymes amylase patent at issue did not satisfy the written description requirement of 35 USC § 112, because the disclosure did not demonstrate possession of the claimed subject matter as a whole. While the opinion states that the decision is consistent with other Federal Circuit case law (such as University of Rochester v. G.D. Searle & Co. (Fed. Cir. 2004)), I find the court’s analysis to reflect an EPO-type analysis. Indeed, the majority states that Novozymes needed to have actually reduced the claimed subject matter to practice in order to satisfy the written description requirement.
In Organic Seed Growers and Trade Association v. Monsanto Co., the Federal Circuit dismissed the plaintiffs’ declaratory judgment action against Monsanto, but in so doing held that Monsanto would be judicially estopped from asserting its patents against these farmers for inadvertent infringement that results in the production, use, or sale of only trace amounts of infringing seed.
On June 4, 2013, the White House issued a press release announcing its “Task Force on High-Tech Patent Issues.” The press release outlined five executive actions and seven legislative recommendations “designed to protect innovators from frivolous litigation and ensure the highest-quality patents in our system.” The target of these initiatives are so-called “patent trolls,” whom the White House asserts are responsible for 62 percent of all patent infringement suits in the United States.Continue reading this entry
As reported on the House Judiciary Committee website, on May 23, 2013, Congressman Goodlatte (R-Va.) released “a discussion draft of legislation designed to address the ever increasing problem of abusive patent litigation.” This draft legislation comes on the heels of the Patent Abuse Reduction Act of 2013 (S. 1013), which was introduced in the Senate by Senator Cornyn (R-Tx.) on May 22, 2013. While much attention has been focused on the patent litigation provisions of these bills, the Goodlatte proposal also would, among other things, eliminate Section 145 actions and eliminate Exelixis I-type Patent Term Adjustment (PTA). While this bill has not been introduced in the House, it is supported by Senator Leahy (D-Vt.) who may introduce similar legislation in the Senate. Continue reading this entry
Now that the March 16, 2013 effective date of the first-to-file provisions of the Leahy-Smith America Invents Act (AIA) is fast-approaching, I have been reviewing the commentary in the USPTO’s February 14, 2013 Federal Register Notices publishing the final First Inventor To File rules and Examination Guidelines. Comment 12 of the Guidelines, which relates to experimental use, caught my attention. Continue reading this entry
Since inter partes review proceedings became available on September 16, 2012, thirteen petitions for inter partes review have been filed. Of these, three were filed against patents examined in Group 1600: U.S. Patent 7,790,869, U.S. Patent 7,713,698, and U.S. Patent 6,258,540.Continue reading this entry
On Tuesday, September 18, 2012, at 2:00 pm eastern, I will be speaking on the IPO IP Chat Channel webinar on “Supplemental Examination: Rules & Strategy.” My distinguished co-panelists are Robert Bahr, Senior Patent Counsel in the USPTO’s Office of Patent Examination Policy, and Kurtis MacFerrin, Patent Counsel at Google Inc.
We will be reviewing the statute and rules governing supplemental examination, which is a new post-grant procedure by which patent owners can ask the USPTO to consider, reconsider, or correct information believed to be relevant to a patent, and immunize the patent from being held unenforceable based on conduct relating to that information. We also will discuss strategies and factors to consider when balancing the possible risks and benefits of this new option for patent holders.
For more information or to register, please visit the IPO IP Chat Channel webpage.
As announced on the USPTO website, the final rules for the provisions of the America Invents Act (AIA) that take effect on September 16, 2012, will be published in the August 14, 2012 Federal Register. Pre-publication versions of the rules packages are available now in the Federal Register reading room. While I have not yet reviewed all of the final rules, it appears that the USPTO took public comments into consideration and made significant changes to some of the proposed rules. Applicants and practitioners should study the final rules packages and consider attending a USPTO “AIA roadshow,” where USPTO representatives will explain the new rules. Practitioners and applicants interested in the new patent trial proceedings also may want to register for and attend the Patent Nation Webinar program hosted by Foley & Lardner LLP on Monday, August 27, 2012. Continue reading this entry
The deadline for submitting public comments on the USPTO’s proposed rules for patent trial proceedings is next week, April 9 and 10, 2012. Specifically, public comments on the seven Federal Register notices containing the USPTO’s rulemaking proposals are due as follows:
- Rules of Practice for Trials before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions—public comments due April 9, 2012;
- Practice Guide for Proposed Trial Rules—public comments due April 9, 2012;
- Changes to Implement Inter Partes Review Proceedings—public comments due April 10, 2012;
- Changes to Implement Post-Grant Review Proceedings—public comments due April 10, 2012;
- Changes to Implement Transitional Program for Covered Business Method Patents—public comments due April 10, 2012;
- Transitional Program for Covered Business Method Patents—Definition of Technological Invention—public comments due April 10, 2012;
- Changes to Implement Derivation Proceedings—public comments due April 10, 2012.
The USPTO has announced that it is launching its pilot program “to incentivize the distribution of patented technologies to address humanitarian needs.” As explained in the Federal Register Notice, “the pilot program will be run as an awards competition.” The program will be open to owners of granted patents and pending patent applications in four technology areas: Medical Technology, Food & Nutrition, Clean Technology, and Information Technology. Selected applicants will receive “a certificate redeemable to accelerate select matters before the USPTO” as well as public recognition, “including an award ceremony at the USPTO.” Program applications will be accepted from March 1, 2012, through August 31, 2012, or until 1,000 program applications are accepted. Up to 50 winners will be accepted.Continue reading this entry
Last week was a big week in U.S. copyright law. On Wednesday, the Supreme Court issued its decision in Golan v. Holder, upholding § 514 of the Uruguay Round Agreements Act, which in effect gave copyright protection to certain preexisting works of Berne member countries that are protected in their country of origin, but not protected in the United States (e.g., were in the public domain in the United States). Coincidentally (?), on the same day, a number of popular websites “went dark” to protest the Stop On-line Piracy Act (SOPA) bill pending before Congress. (Proponents of SOPA say that it is necessary to protect intellectual property rights in the internet age, while opponents say that it would promote censorship and stifle the “free market” of the worldwide web.) Not to be left out, on Thursday, the USPTO issued a position paper on the “Fair Use of Copies of [Non-Patent Literature]” in the patent examination process. Continue reading this entry
Last week, the USPTO issued two separate Federal Register Notices updating several of its special programs: the Patent Application Backlog Reduction Stimulus Plan, the Green Technology Pilot Program, and the Extended Missing Parts Pilot Program. Continue reading this entry
Just in time for holiday gift-giving, to make good on your New Year’s resolution to figure out what the America Invents Act is all about, and to kick-off your 2012 library purchases:
As summarized by the publisher:
The Leahy-Smith America Invents Act makes the most sweeping changes to the U.S. patent law in nearly 60 years. America Invents Act: Law & Analysis is the definitive, must-have resource to ensure understanding of and compliance with the new America Invents Act.
Authored by top U.S. patent law firm Foley & Lardner, this title presents a definitive explanation of the new patent reform legislation. The authors bring clarity to the complex and confusing provisions of the America Invents Act, as well as insight into how the Act could be interpreted.
America Invents Act: Law and Analysis will be an invaluable resource to help you:
• Understand the implications of the new patent reform act through clear and straightforward explanations.
• Quickly find the correct effective date for important changes in the law.
• Gain practical guidance on how the Act may be interpreted so you can anticipate how the Act may affect your clients.
Table of Contents
Chapter 1. Introduction – Courtenay C. Brinckerhoff and Sharon S. Barner
Chapter 2. The First-To-File Provisions – Courtenay C. Brinckerhoff
Chapter 3. Derivation and Derivation Proceedings – Antoinette F. Konski
Chapter 4. Changes Impacting Patent Prosecution – Lauren L. Stevens, Lorna L. Tanner and Courtenay C. Brinckerhoff
Chapter 5. Transitional Program for Covered Business Methods – Paul S. Hunter
Chapter 6. Inter Partes Review and Post-Grant Review – Jacqueline D. Wright Bonilla
Chapter 7. Provisions Related to Litigation – Debra D. Nye
Chapter 8. Other Components of AIA – Lauren L. Stevens, Lorna L. Tanner and Jacqueline D. Wright Bonilla
Appendix A The America Invents Act
Appendix B Patent Act Redline Version
Appendix C Side-by-Side Comparison of Old and New Patent Act Sections
Appendix D Comparison of Selected Sections of Pre-AIA and AIA U.S. Patent Law
Appendix E Revision of Standard for Granting an Inter Partes Reexamination Request
Appendix F Ex Partes Quarterly Report – September, 2011
Appendix G Inter Partes Quarterly Report – September, 2011
As I wrote previously, the America Invents Act created a surcharge on patent applications that are not filed electronically. That sucharge took effect on November 15, 2011.
The “Electronic Filing Incentive” Fee
The America Invents Act (AIA) calls the new application filing fee surcharge an “Electronic Filing Incentive.” It appears in section 10 of the AIA: